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DECREE No

DECREE No. 54/2000/ND-CP OF OCTOBER 3, 2000 ON THE PROTECTION OF INDUS-TRIAL PROPERTY RIGHTS TO BUSINESS SECRETS, GEOGRAPHICAL INDICATIONS AND COMMERCIAL NAMES, AND THE PROTECTION OF THE RIGHT AGAINST INDUSTRIAL PROPERTY-RELATED UNFAIR COMPETITIONS

THE GOVERNMENT

Pursuant to the September 30, 1992 Law on Organization of the Government;

Pursuant to the October 28, 1995 Civil Code;

Pursuant to the Resolution of the IXth National Assembly, 8th session, on the implementation of the Civil Code;

Pursuant to the May 10, 1997 Commercial Law;

In order to contribute to enhancing the comprehensive and effective protection of the industrial property rights, protection of fair business activities and protection of legitimate interests of consumers;

At the proposal of the Minister of Science, Technology and Environment,

DECREES:

Chapter I

GENERAL PROVISIONS

Article 1.- Regulation scope

This Decree prescribes in detail the protection of industrial property rights to some of "the other objects" specified in Article 780 of the October 28, 1995 Civil Code, including: business secrets, geographical indications and commercial names, and the protection of the right against industrial property-related unfair competitions.

Article 2.- Application objects

1. This Decree shall apply to domestic and foreign organizations and individuals conducting business activities on the Vietnamese territory.

2. This Decree shall also apply to foreign organizations and individuals that do not conduct business activities on the Vietnamese territory but fall into one of the following cases:

a/ Organizations and individuals that have their industrial property rights protected under provisions of the Paris Agreement or provisions of international agreements on mutual industrial property recognition and protection, which Vietnam has signed or acceded to;

b/ Organizations and individuals from countries and/or territories, which have, together with Vietnam, accepted the principle of reciprocity in the industrial property protection for each other�s organizations and individuals.

Article 3.- Application of legal documents

The protection of business secrets, geographical indications, commercial names and the right against unfair competitions in the industrial property domain shall comply with this Decree�s provisions and other relevant legal documents of Vietnam.

In cases where an international agreement which Vietnam has signed or acceded to contains provisions different from those of this Decree, the provisions of such international agreement shall apply.

Article 4.- Interpretation of terms

The following terms and expressions, used in this Decree, shall be understood as follows:

1. "Commercial instructions" are signs and information to provide commercial instructions to commodities and services, including trademarks, commercial names, business logos, business slogans, geographical indications, goods packing designs, goods labels...;

2. "Use of commercial instructions" are acts of affixing such commercial instructions on goods, goods packing, service means, business transaction papers, advertising means; selling, advertising for sale, storing for sale and importing goods affixed with such commercial instructions;

3. "Investment yields" are knowledge and information in forms of technologies, inventions, utility solutions, industrial designs, technical know-hows, business secrets..., obtained from financial or intellectual investment activities;

4. "Use of investment yields" are acts of using knowledge and information specified in Clause 3 of this Article to conduct activities of manufacturing products, providing services and/or trading in goods; selling, advertising for sale, storing for sale and importing products manufactured with the use of such knowledge and/or information.

Article 5.- Conditions for establishing industrial property rights to business secrets, geographical indications and commercial names

The industrial property rights to business secrets, geographical indications and commercial names shall be automatically established when there exist all the conditions prescribed in Articles 6, 10 and 14 of this Decree without having to make registration at the competent State agencies.

Chapter II

INDUSTRIAL PROPERTY RIGHTS TO BUSINESS SECRETS, GEOGRAPHICAL INDICATIONS AND COMMERCIAL NAMES

Article 6.- Business secrets

1. Protectable business secrets are investment yields in form of information that satisfy all the following conditions:

a/ Being those other than general knowledge;

b/ Being applicable to business activities, and when being used, such information may render their holders advantages over those who do not hold or use such information;

c/ Being kept secret by their owners with necessary measures, so that such information shall neither be disclosed nor easily accessible.

2. Other secret information irrelevant to business activities, such as: personal status, State management, security and national defense secrets, shall not be in the name of business secrets.

Article 7.- Owners of industrial property rights to business secrets

1. Owners of industrial property rights to business secrets are organizations and/or individuals that have made investment to create or acquire investment yields being business secrets.

2. In cases where a business secret is created or acquired by an employee or a contract performer while performing his/her/its assigned task, such business secret shall be under the employer�s or assignor�s ownership, except otherwise agreed upon by the involved parties.

Article 8.- Content and duration of the protection of industrial property rights to business secrets

1. Owners of industrial property rights to business secrets are entitled to possess, use and dispose of such business secrets according to the provisions of law.

2. Rights of owners of industrial property rights to business secrets shall be protected as long as such business secrets satisfy all the conditions prescribed in Clause 1, Article 6 of this Decree.

Article 9.- Transfer of industrial property rights to business secrets

1. Industrial property rights to business secrets may be transferred or inherited according to the provisions of law.

2. The transfer of industrial property rights to a business secret shall be effected in form of a written contract, in which the transferor must clearly state the business secret to be transferred. In cases where the contractual parties agree to transfer only the right to use the business secret (business secret license), the transferee shall be obliged to take necessary secret-keeping measures as required by the transferor.

Article 10.- Geographical indications

1. Protectable geographical indications are information on geographical origins of goods and meet all the following conditions:

a/ Being expressed in a word, expression, sign, symbol or image used to indicate a nation or a territory or a locality belonging to a nation;

b/ Being displayed on goods, goods packing or transaction papers related to the goods purchase and/or sale, in order to indicate that such goods have the origin from a nation, territory or locality, whereas the quality, prestige and reputation or other properties of such goods are principally attributed to their geographical origin.

2. If the geographical indications are appellations of goods origin, the protection thereof shall be effected according to the provisions of the current legislation on appellations of goods origin.

3. Geographical information, which have become common names of goods and/or are no longer capable of indicating geographical origins, shall not be protected in the name of geographical indications according to provisions of this Decree.

Article 11.- Those entitled to use geographical indications

Entitled to use geographical indications are all organizations and/or individuals that conduct activities of manufacturing goods bearing such indications on the corresponding national territory, territorial area or locality, provided that the goods manufactured by such organizations/or individuals must preserve the existing prestige or reputation of such type of goods.

Article 12.- Content of industrial property rights to geographical indications

1. Those entitled to use geographical indications may display such indications on goods, goods packing and/or transaction papers for purposes of purchasing, selling and advertising relevant goods.

2. The right to use geographical indications shall not be transferable.

Article 13.- Duration of the protection of industrial property rights to geographical indications

The right to use the geographical indications shall be protected as long as all the conditions regarding geographical indications prescribed in Clause 1, Article 10 and the conditions regarding manufacturing activities of those entitled to use geographical indications prescribed in Article 11 of this Decree are fully met.

Article 14.- Commercial names

1. A protectable commercial name is the proper name of an organization or individual used in his/her/its business activities and meets all the following conditions:

a/ Being a combination of alphabetical letters, which can be accompanied with numerals and pronounceable;

b/ Being capable of distinguishing the business subject bearing such name from other business subjects in the same business field.

2. The following kinds of names shall not be protected as commercial names:

a/ Names of administrative agencies, political organizations, socio-political organizations, social organizations, socio-professional organizations or subjects irrelevant to business activities;

b/ Names used for purpose of exerting the function of commercial names, which are, however, incapable of distinguishing business subjects of business establishments in the same field;

c/ Commercial names which cause confusion with others� commercial names which have previously been used in the same locality and in the same business field, or cause confusion with others� trademarks, which have already been protected since before such commercial names are used.

Article 15.- Owners of industrial property rights to commercial names

Owners of industrial property rights to commercial names are organizations and/or individuals conducting business activities under such commercial names.

Article 16.- Contents of industrial property rights to commercial names

1. Owners of industrial property right to commercial names may utilize such commercial names for business purposes, by using the commercial names to introduce themselves in business activities or displaying them on transaction papers, signboards, products, goods, goods packing and advertisements.

2. Owners of industrial property rights to commercial names may transfer such commercial names under contracts or bequeath them to others, provided that the transfer must be effected together with the entire business establishments and business activities under such commercial names.

Article 17.- The duration of the protection of industrial property rights to commercial names

Industrial property rights to commercial names shall be protected as long as their owners sustain business activities under such commercial names.

Chapter III

PROTECTION OF INDUSTRIAL PROPERTY RIGHTS TO BUSINESS SECRETS, GEOGRAPHICAL INDICATIONS AND COMMERCIAL NAMES

Article 18.- Acts of infringing upon the industrial property rights to business secrets

Acts of infringing upon the industrial property rights to business secrets include:

1. Accessing or gathering information on business secrets by taking acts against secret-keeping measures of lawful owners of such business secrets;

2. Disclosing or using information on business secrets without permission of owners of such business secrets;

3. Breaching secret-keeping contracts or deceiving or abusing the trust of persons in charge of secret-keeping, abusing the trust of owners of business secrets to access, gather and disclose information on such business secrets;

4. Getting access to and/or gathering information on business secrets of others, when the latter file, according to the procedures, applications for business-related permits or permit for circulation of products - especially pharmaceuticals and agro-chemical products, or taking acts against secret-keeping measures of administrative agencies, or using such information for business purposes, including purpose of applying for business-related permit or product circulation permit.

Article 19.- Acts of infringing upon the industrial property rights to geographical indications

Acts of infringing upon the industrial property rights to geographical indications include:

1. Using any commercial instruction, which is identical or similar to a geographical indication currently under protection, thus causing misconception about the geographical origin of goods;

2. Using any commercial instruction, which is identical or similar to a geographical indication currently under protection, for identical, similar or relevant goods, thus damaging the prestige or reputation of the goods bearing such geographical indication, including cases where it is used together with such words as "method", "model", "type", "imitated to", or the like;

3. Using geographical indications about wines or spirits for those not of origin from the indicated territories, including cases where the instructions on goods� real origin are provided or the geographical indications are used in form of translations into other languages or used together with such words as "model", "type", "formula", "imitated to" or the like.

Article 20.- Acts of infringing upon the industrial property rights to commercial names

Acts of infringing upon the industrial property rights to commercial names are all acts of using any commercial instructions identical or similar to commercial names of others for the same type of product or service or similar product or service, thus causing confusion about business subjects, business establishments or business activities under such commercial names.

Article 21.- Right to request the handling of infringements upon industrial property rights to business secrets, geographical indications and commercial names

1. Owners of industrial property rights to business secrets, commercial names and persons entitled to use geographical indications shall be entitled to request the competent State bodies to force persons who commit acts of infringing upon their rights to stop such infringing acts and pay damages.

2. In cases where acts of infringing upon industrial property rights to commercial names or providing misleading information about commercial names or misleading indications to geographical origin of goods, thus rendering consumers confused, are committed or taken, such consumers may request the competent State bodies to force the persons who commit the above-said acts to stop them and pay damages to the consumers.

3. The statute of limitations for exercising the right to request the handling of an infringing act prescribed in Clauses 1 and 2 of this Article shall be one year calculated from the date the infringing act is detected, but must not exceed three years from the date such infringing act is committed.

Article 22.- Obligation to prove and evidence

1. When exercising the right to request the handling of infringing acts prescribed in Clause 1, Article 21 of this Decree, the owners of industrial property rights to business secrets, commercial names and persons entitled to use geographical indications shall be obliged to prove the conditions for establishing their rights and the scope thereof; clearly state the names and addresses of persons who have committed infringing acts; and supply evidences of scope and seriousness of such infringements.

In case of damages claims, the owners of industrial property rights to business secrets, commercial names and the persons entitled to use geographical indications shall have to evidence the degree of damage caused by infringers.

2. If the persons who request the handling of infringing acts are consumers, such persons shall have to clearly state the names and addresses of the infringers and supply evidences of the infringement and prove the extent of damage (if any).

Article 23.- The order and procedures for handling acts of infringing upon industrial property rights to business secrets, geographical indications and commercial names

The handling of acts of infringing upon industrial property rights to business secrets, geographical indications and commercial names shall comply with the order and procedures for handling acts of infringing upon other industrial property rights.

Chapter IV

PROTECTION OF THE RIGHT AGAINST INDUSTRIAL PROPERTY-RELATED UNFAIR COMPETITIONS

Article 24.- Acts of industrial property-related unfair competition

Acts of industrial property-related unfair competition include:

1. Using commercial instructions to mislead the perception and information about business subjects, business establishments, business activities, goods and/or services, for the purposes of:

a/ Taking advantage of the prestige and reputation of other producers and/or business people in one�s production and/or business activities;

b/ Damaging the prestige and reputation of other producers and/or business people in one�s production and/or business activities;

c/ Causing confusion about origins, production methods, properties, quality, quantity or other characteristics of goods and/or services; or about conditions for supply of goods and/or services... to consumers in the course of recognizing and selecting goods and/or services or in business activities.

2. Appropriating and using investment yields of others without their permission.

Article 25.- The right against industrial property-related unfair competitions

1. Organizations and individuals that suffer from damage or are in danger of suffering from damage caused by unfair competition acts in the field of industrial property shall be entitled to request the competent State bodies to force persons who commit unfair competition acts to stop them, and claim damages; administratively handle or examine for penal liability persons who commit unfair competition acts.

2. Consumers� societies and professional associations of organizations and individuals may represent their own members in exercising the right provided for in Clause 1 of this Article.

Article 26.- The proving obligation of organizations and individuals that request the handling of unfair competition acts

Organizations and individuals that exercise the right to request the handling of unfair competition acts provided for in Article 25 of this Decree shall be obliged to prove the competent State bodies the fact that their legitimate rights and interests or those of organizations and individuals they are representing are infringed upon or in danger of being damaged by unfair competition acts.

Article 27.- Handling of unfair competition acts

Organizations and individuals that commit unfair competition acts in the field of industrial property shall, depending on the nature and seriousness of such acts, be administratively handled or examined for penal liability. If any damage is caused, compensations therefor must be made according to the provisions of law.

Chapter V

THE STATE MANAGEMENT OVER THE PROTECTION OF INDUSTRIAL PROPERTY RIGHTS TO BUSINESS SECRETS, GEOGRAPHICAL INDICATIONS AND COMMERCIAL NAMES AND THE PROTECTION OF THE RIGHT AGAINST INDUSTRIAL PROPERTY-RELATED UNFAIR COMPETITIONS

Article 28.- Contents of the State management over the protection of industrial property rights to business secrets, geographical indications and commercial names and the protection of the right against industrial property-related unfair competitions

1. Promulgating policies, strategies, planning and plans for development of industrial property activities and legal documents concerning the protection of business secrets, geographical indications, commercial names and the right against unfair competitions;

2. Protecting legitimate interests of the State, organizations and individuals in the field of industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions;

3. Organizing the implementation of legal documents and policies on industrial property concerning the protection of business secrets, geographical indications, commercial names and the right against unfair competitions;

4. Managing activities of industrial property consultancy and representation services related to business secrets, geographical indications, commercial names and the right against unfair competitions;

5. Training and building up a contingent of cadres operating in the field of industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions;

6. Undertaking international cooperation in industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions;

7. Guiding, inspecting and examining the implementation of policies and the observance of the legislation on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions;

8. Receiving and settling complaints and denunciations, handling violations of the legislation on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions;

Article 29.- Responsibilities of the State bodies competent to manage the protection of industrial property rights to business secrets, geographical indications, commercial names and the protection of the right against industrial property-related unfair competitions;

1. The Ministry of Science, Technology and Environment shall be the governmental body to perform the function of unified State management over the industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions throughout the country. It shall have to organize and direct the implementation of regimes, policies and legal provisions on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions.

2. The National Office of Industrial Property under the Ministry of Science, Technology and Environment shall have to assist the Minister of Science, Technology and Environment in performing the following tasks:

a/ To coordinate with the other State bodies as well as social organizations in applying measures to protect the industrial property rights related to business secrets, geographical indications, commercial names and the right against the unfair competitions, and to ensure that legal provisions on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions are strictly observed, including the assessment of the conditions for establishing rights, content of rights and acts of infringing upon rights to business secrets, geographical indications, commercial names as well as unfair competition acts, at the requests of State bodies, organizations and individuals;

b/ To receive and settle according to his/her competence complaints and/or denunciations about industrial property related to business secrets, geographical indications, commercial names and the right against industrial property-related unfair competitions;

c/ To examine professional qualifications of, grant practice certificates to and professionally manage organizations providing industrial property representation services related to business secrets, geographical indications, commercial names and the right against industrial property-related unfair competitions;

d/ To give professional instructions and organize professional fostering courses on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions for industrial property managing agencies of the ministries, branches, localities and establishments.

e/ Within the scope of authorization, to undertake international cooperation activities in the field of industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions.

3. The ministries, the ministerial-level agencies, the agencies attached to the Government and the People�s Committees of the provinces and centrally-run cities shall, within their functions and tasks, have to organize, direct and manage industrial property activities related to business secrets, geographical indications, commercial names and the right against unfair competitions in their respective branches or localities.

The science, technology and environment managing bodies of branches and localities shall have to assist the leaders of such branches and localities in performing the above-said function and carrying out the following tasks:

a/ To propose to the ministers, the heads of the ministerial-level agencies, the heads of the agencies attached to the Government and the presidents of the People�s Committees of the provinces and centrally-run cities measures to concretize the realization of the State�s policies on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions, and organize the application of such measures;

b/ To organize the management of the protection of industrial property right to business secrets, geographical indications, commercial names and the protection of the right against industrial property-related unfair competitions in their respective branches and localities, and take measures to enhance the effectiveness of such work;

c/ To organize the propagation of policies on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions, and coordinate with social organizations in taking measures to step up the emulation movement for industrial property creativeness and activities;

d/ To help business subjects under the management of their respective branches and localities prove the conditions for establishing industrial property right related to business secrets, geographical indications, commercial names and the right against unfair competitions in Vietnam and abroad.

e/ To coordinate with the law enforcement bodies in protecting the industrial property rights related to business secrets, geographical indications, commercial names and the right against unfair competitions, and handling violations of the legislation on industrial property related to business secrets, geographical indications, commercial names and the right against unfair competitions, including the assessment of the conditions for establishing rights, contents of rights and acts of infringing upon rights to business secrets, geographical indications, commercial names and the determination of industrial property-related unfair competition acts at the requests of State agencies, organizations and individuals.

Article 30.- Handling of administrative violations

The handling of administrative violation in the protection of industrial property rights to business secrets, geographical indications, commercial names and the right against industrial property-related unfair competitions shall be prescribed in another Government Decree.

Article 31.- Complaints, denunciations and settlement thereof

1. Organizations and individuals may lodge complaints to the competent agencies, organizations and/or individuals about administrative decisions and administrative acts in contravention of law in the protection of industrial property rights to business secrets, geographical indications, commercial names and the protection of the right against industrial property-related unfair competitions

2. Individuals may denounce to the competent agencies, organizations and/or individuals illegal acts in the protection of industrial property rights to business secrets, geographical indications, commercial names and the protection of the right against industrial property-related unfair competitions.

3. The competent agencies, organizations and/or individuals, upon receiving complaints and/or denunciations, shall have to settle them in a prompt and lawful manner according to the provisions of the legislation on complaints and denunciations.

Chapter VI

IMPLEMENTATION PROVISIONS

Article 32.- Transitional provisions

The business secrets, geographical indications and commercial names, which have been existed before the effective date of this Decree and still satisfy all the conditions for protection prescribed by this Decree, shall be protected under the provisions of this Decree.

Article 33.- Implementation provisions

This Decree takes effect 15 days after its signing.

The ministers, the heads of the ministerial-level agencies, the heads of the agencies attached to the Government and the presidents of the People�s Committees of the provinces and centrally-run cities shall have to implement this Decree.

On behalf of the Government

Prime Minister
PHAN VAN KHAI